Wikimedia Blog/Drafts/Celebrating women and change in IP

Picture of presenters and the audience at WIPLA's IP Year in Review: Trends and Developments of 2013 conference.

With the passing of International Women's Day on March 8th, the accomplishments of women in economics, politics, and science were brought to the forefront. An official holiday in over 25 countries, the special day was celebrated internationally with Wikipedia edit-a-thons focused on expanding articles on women, statements from United Nations organizations, conferences and even a Google Doodle.

The Women's Intellectual Property Lawyers Association (“WIPLA”) hosted a timely panel of impressive female attorneys from some of the most influential organizations in Silicon Valley to discuss the latest developments in intellectual property law. WIPLA’s mission is aligned with the goals of International Women’s Day as the organization focuses on supporting and empowering female lawyers within the often male-dominated intellectual property field,

Intellectual property law is a dynamic field that is constantly changing as courts and lawmakers work their way around new technologies and scientific breakthroughs. The panel discussed an array of the most significant topics in the areas of trademark law, patent law and trade secrets law. One of the women on the panel was Wikimedia’s Legal Counsel, Yana Welinder, who presented on trademark developments. Below are some highlights from the panel's presentations.

Recent Developments in Trademark Law: ICANN releases new top level domains

Trademark holders are facing new challenges with the Internet Corporation for Assigned Names and Numbers' (ICANN) approval of new top level domains. So now, instead of being restricted to only 22 generic top-level domains (gTLDs) like .org or .com, you will be able to register your site with up to an additional 1400 gTLDs like .book, or .ninja, once they are issued. ICANN hopes to enhance competition and communication on the Internet with the introduction of these new gTLDs. But the introduction of 1400 new gTLDs brings with it a greater potential of cybersquatting, forcing trademark holders to buy the gTLDs related to their trademarks, regardless of whether they ever plan to use them.

As a trademark holder, you have the exclusive right to pre-register for a gTLD of your trademark within 30 days after a gTLD launches (known as the "sunrise" period). Unfortunately, you may be unable to purchase a gTLD if your trademark is not a perfect match to the domain requested. You can still purchase the domain name after this period, but you will have to compete with cybersquatters who rush to reserve domain names of famous brands like Wikimedia. Thus, there are no guarantees during this process that you will get your domain name.

If you are unable to purchase the domain name you want, hope is not lost as there are three procedures to retrieve domain names from cybersquatters. The Uniform Domain-Name Dispute Resolution Policy (UDRP) was established by ICANN as a streamlined procedure for domain disputes with a decision delivered within a few months. If an arbitrator determines you meet the 3-part test, she or he can either order the cancellation or transfer of the domain name to you. .

UDRP fees can serve as an impediment for retrieving domain names, so ICANN published the Uniform Rapid Suspension System (URS) procedure in 2013 to provide a more affordable and faster method of retrieving domain names in more clear-cut cases. This process still requires the same 3-part test as the UDRP, however the fees only range from $300-$500 and a determination is made within 3-5 days from the examinations start. The URS procedure does not result in the transfer of a domain name. Instead, the domain name will be rerouted to a URS placeholder page until the end of the registration when the trademark holder will receive the first option to extend the registration period for another year. The URS also has an appeals process that allows the trademark holder to initiate a UDRP after losing a URS procedure.

You can also sue a cybersquatter that registers a domain through a US registrar under the federal Anticybersquatting Consumer Protection Act as a final resort to retrieve the domain name. This option is less favored because a typical lawsuit will cost significantly more than the ICANN's procedures and will take years to resolve.

Recent Developments in Biotechnology Patent Law: Isolated DNA cannot be patented

In 2013, the Supreme Court decided Association for Molecular Pathology v. Myriad Genetics (Myriad), a case that will have a huge impact on what biotechnology companies can patent. Myriad Genetics discovered the exact location and sequence of the BRCA1 and BRCA2 genes. Patients with mutations in these genes have an increased risk of breast and ovarian cancer. It then obtained patents that gave it the exclusive right to isolate these genes and to create BRCA cDNA. Based on these patents, Myriad Genetics sent letters to entities performing genetic testing for the BRCA genes asserting that testing violates its patents and filed patent infringement suits against these entities. This ultimately led to Myriad Genetics being the only entity to provide BRCA testing. Myriad was a lawsuit brought by doctors, researchers, medical patients and advocacy groups seeking a declaration that the patents are invalid under 35 U.S.C. § 101.

Section 101 of the Patent Act grants patent rights to “whoever invents or discovers any new and useful...composition of matter, or any new and useful improvement thereof...subject to [certain] conditions and requirements.” Previous cases such as Mayo Collaborative Services v. Prometheus Laboratories and Diamond v. Chakrabarty have noted that an implicit exception to section 101 is that “laws of nature, natural phenomena, and abstract ideas are not patentable.” The Supreme Court distinguished Myriad from previous cases and held that DNA is a product of nature and genes are not patentable just because they have been isolated. The Court did, however, find that the cDNA that Myriad Genetics had synthesized and patented was eligible for patent protection.

The Myriad case has interesting implications in the biotechnology field. The USPTO released a memorandum following the case advising patent applicants and examiners on how claims involving natural products should be examined. In order to be patentable, an invention must be significantly different than a natural product.

Recent Developments in High Technology Patent Law: Transitioning to a first to file system

The America Invents Act (“AIA”) changed the way patents are granted by the U.S. Patent and Trademark Office. Previously, if two inventors had patent applications pending at the same time, the USPTO would conduct an interference proceeding to determine which inventor was first to invent the subject matter of the patent. Interference proceedings were unique to the United States, as every other country granted patent rights to the first inventor to file for a patent on the subject matter. AIA, which went into effect in 2012, switched the United States over to a first to file system on March 16, 2013 .

One potential effect of AIA on the high tech industry that was mentioned in the panel was a change in the way that engineers and patent attorneys interact. Under the first-to-invent system, engineers would generally conceive of an invention and develop it into a product to be sold before consulting an attorney to file for a patent. Under the first-to-file system, attorneys and engineers may have a more collaborative relationship, so that attorneys are able to identify patent rights and file early applications.

Recent Developments in Trade Secret Law: Courts ruling against restraints on trade

One of the common practices for entities with trade secrets is to ask employees to sign a contract with a non-compete provision and a non-disclosure provision. Non-compete provisions require an individuals who have left a company to refrain from employment that would compete with his former employer for a limited time and within a limited geographical region. Non-disclosure provisions prevent individuals from sharing information such as trade secrets.

Contract law with regards to these provisions is governed by state common law. Over the last year, courts in several states have invalidated provisions as an illegal restraint on trade. In UCB Manufacturing, Inc. v. Tris Pharma, Inc., a New Jersey court applying New York law held that a non-disclosure provision was invalid because it was not limited in terms of time, space, or scope. It was vague as to what the former employee was not allowed to disclose. For example, it prohibited him from disclosing “work procedures” and covered information already available to the public, thereby making it difficult for the former employee to continue in his profession. In Fifield v. Premier Dealer Services, the Illinois Appellate Court found a non-compete agreement to be invalid for lack of consideration. The employee only worked with the employer for three months prior to resigning, and Illinois courts have required a minimum of two years of continued employment to establish adequate consideration for a non-compete agreement that is so restrictive.

These cases are notable because they show that courts have increasingly been scrutinizing non-compete and non-disclosure provisions and finding in favor of the employee where the employee’s livelihood is at risk.

Changes are still to come

This past year was full of many changes in IP. These new changes, especially in areas of trademark, could impact WMF sites like Wikipedia. As ICANN releases new domain names, WMF will need to figure out how to prevent new cybersquatters from diverting traffic from the Wikimedia sites to sites that do not subscribe to our mission. If another party were to register "wikipedia" with another domain, for example, it could confuse users into thinking the site was run under the same policies and was committed to the same mission of free knowledge as Wikipedia. This could be problematic if the site began using advertising. Users could lose faith in the Wikimedia projects if they think they are now accepting funds from for-profit advertisers. Worse still, a cybersquatter could set up a phishing site using a Wikimedia project name in the domain and steal users' passwords. So, even if the new domains are never used by WMF to host content, WMF may need to acquire them to prevent our projects from being compromised.

While the trade secret and patent updates may be less relevant to the work of WMF, we hope that this information could be helpful to the volunteers that are writing Wikipedia articles on these topics. The developments in biotech patent law and trade secrets law indicate a general trend towards free knowledge and innovation. Limits on what can be patented gives researchers more freedom to invent and collaborate, as they do not have to seek licenses to work with the biological building blocks of life. There is speculation that the ‘’Myriad’’ decision would apply to other biological compounds as well, such as antibodies. In the area of trade secrets, NDAs and noncompete agreements have the effect of limiting what inventors can do once they leave a job. A trend towards invalidating these agreements will hopefully have a positive impact on research and development of new technologies.

The America Invents Act fully came into effect on March 16, 2013, switching the United States over to a first-to-file system. The Supreme Court decided several important intellectual property cases in 2013, including ‘’Myriad.’’ 2014 is sure to bring further changes as inventors, attorneys and the courts implement these new developments and dedicated Wikipedia editors continue to update articles related to IP in response to these changes.

Roshni Patel, Legal Fellow, Wikimedia Foundation

Manprit Brar, Legal Fellow, Wikimedia Foundation